Comment by dboreham | Hacker News Reader

Comment by dboreham | Hacker News Reader

Parent Full thread

What exactly do you mean by "they patented one of my..." ?

Patents have named inventors, which can not be companies: they have to be people.

When someone works for a company (actually because of this rule that patents are assigned to individual inventors) they agree as a condition of employment to "assign" the rights to any patents awarded to them in conjunction with performing work for the company (and sometimes not when doing so also) to said company.

So, did they company pay for filing of a patent with you as a named inventor? If so then you signed away the rights to this patent (or you did if they have their legal paperwork straight). You own it as much as I do. You might try asking them nicely for a license to use it -- they might be inclined to help you since to some extent they also need your good will for any future litigation over said patent.

Or, did someone else at the company file a patent covering something that you believe you (not them) invented? If so then prepare to open a legal can of worms.

I guess you might also be saying that the company filed a patent with or without you as a named inventor that you believe is weak (not really a patentable invention) and you're wondering if this is any different than the likely 1000 other weak patents out there covering the same "invention"?

Perhaps if you post more details on the specifics of the situation folks here can help with more accurate advice.

To add more information, I built something for a HackWeek at the company, that they now want to patent (with me as the named inventor). However, I have been considering quitting and doing a startup which would involve the thing they are trying to patent, in a small way. If I sign the papers, does this prevent me from using similar software techniques at my future startup?

Typically the inventor has to prepare the patent, and it is first to file now. It is then up to the person doing the filing to assign the patent to a company of their choice.

I'd consider filing your own provisional patent ($70), which will never see the light of day unless you continue the application in a year, but will give you the priority date.

Filing, even for a provisional, isn't trivial. To survive the decades-long process, you'll need claims and drawings from the get-go. You'll also need to scour google.com/patents to make sure it hasn't already been invented.

It won't become known for a year-plus after filing that you have this patent application, and by then hopefully the old company will have forgotten about your little technology.

But rather than being sneaky, instead of signing, consider proposing a separation agreement that basically says you're done, everybody's square and nobody's suing anybody for any reason. If they say whoa there, just say you'd prefer not to patent anything because you value your privacy. You're probably hard to replace and I'd never trade a good employee for a patent.

This gives them the choice of firing you (meaning you can file yourself with no contract ramifications) or giving you a free pass on your patent idea.

"To survive the decades-long process"

It's not a decades-long process. I've seen it be closer to 2 years.

I was referring to "patent process", not "filing process".

Filing application until issue of patent is only the very beginning. You have renewal payments at 3.5, 7.5, and 11.5 years after issue. If you get a restriction requirement, you get to start the clock over each time as your single patent application blossoms into multiple, or dozens, or hundreds, if it's deemed worth the expense. Continuations-in-part and reissues can take it even further.

And that doesn't even bring litigation into the picture. Your patent can be long expired before you file an infringement lawsuit (because you can demonstrate they infringed when it was valid), and that by itself can add 10+ years, as we're seeing in many cases out of the courts.

For what it's worth, I'm on year 9 of the filing-to-issue process for my first patent.

Thanks for the additional info. ianal but I think you are screwed as far as trying to challenge their right to the invention. They surely had you assign all IP created in the course of your work to them. They can proceed with a filing even without your consent or help (although they are going to much prefer to do so with your assistance and good will).

btw as an aside : how can someone work in this industry and _not_ know this? I'm not questioning your sincerity but I mean why isn't everyone handed a short pamphlet to read when they get into this business that explains this stuff?

Anyway, back to your situation : based on what you have said I'd suggest going to your management and asking if they would be interested in commercializing your invention as some sort of joint venture or spin-off company. They would provide your company with a license in exchange for, say, equity. In return they would get to enjoy your full and enthusiastic participation in the patent filing and defense process. Worth a try.

It depends on the IP clauses in your contract. A common stipulation is that they own everything you do on company time or resources unless you file specific exceptions. Given that this was a hack week project for the company, if your contract has such a clause, you're probably boned.

Reply on news.ycombinator.com